World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Revlon Consumer Products Corporation v. William Ghorayeb

Case No. D2010-1371

1. The Parties

1.1 The Complainant is Revlon Consumer Products Corporation of New York, United States of America; (the “Complainant”) internally represented.

1.2 The Respondent is William Ghorayeb of Mount Lebanon, Lebanon (the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed domain name <revlonlebanon.com> (the disputed “Domain Name”) is registered with eNom (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2010. On August 13, 2010, the Center transmitted by email to the Registrar, a request for registrar verification in connection with the disputed domain name. On August 13, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

3.2 The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 06, 2010. The Respondent did not file a Response. Notice of Respondent’s default was sent on September 8, 2010.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on September 17, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

4.1 The Complainant is Revlon Consumer Products Corporation, whose principal place of business is in New York, New York, USA. The Complainant and its affiliates own the well known REVLON trademark which is registered around the world for cosmetics and related beauty care products and has been in use for over 75 years. The Complainant sells REVLON products in approximately 175 countries through wholly owned subsidiaries in 14 countries and through a large number of distributors and licensees. The Complainant’s net sales for the year 2009 were in the sum of USD 1.2959 billion. The Complainant’s parent company Revlon Inc. is also a publicly traded company listed on the New York Stock Exchange and is frequently referenced in financial and business publications and websites. Furthermore the Complainant and a number of its affiliates around the world are owners of the REVLON trademarks for cosmetics and other beauty care related products which are sold in numerous countries including in the European Union, France and in Lebanon. The REVLON trademark is also registered in Lebanon and in France where the Respondent maintains contact addresses; the French and Lebanese certificates of Trademark Registrations covering a variety of cosmetic goods were enclosed with the Complaint.

4.2 The Respondent registered the disputed Domain Name on November 23, 2009 according to the Registrar’s WhoIs database. Although the Respondent did not file a proper response within the stipulated time frame, in emails dated August 17, 2010 and September 15, 2010, the Respondent stated that he will and then had given instructions for the disputed Domain Name to be transferred to the Complainant.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that the Complaint is based upon the famous trademark REVLON which is registered around the world for a variety of goods in various international classes and has been in use for over 75 years. In this regard the Complainant relies on: (i) fourteen 14 trademark certificates issued in the United States, (ii) one (1) Lebanese Trade Mark certificate; and (iii) three French Certificates of Trademark Registration. The Complainant states that it has attached these Trade Mark certificates because the WhoIs database reveals contact information for the Respondent in both France and Lebanon.

5.2 The Complainant states that it has maintained a presence on the Internet since May 1997 when its own website at “www.revlon.com” was launched. The Complainant also asserts that the REVLON trademark is its most valuable asset, thus trademark protection is very important to its business. The Complainant states that at the moment, it currently owns 50 United States trademark registrations and or pending applications for trademarks incorporating the REVLON trademark and more than 2,600 trademark registrations and or pending applications for trademarks incorporating the REVLON mark worldwide.

5.3 The Complainant contends therefore that the disputed Domain Name <revlonlebanon.com> is both confusingly similar and identical to the Complainant’s registered trademarks, primarily because the disputed Domain Name wholly incorporates the REVLON, trademark. The Complainant further argues that the addition of the phrase “.com” to the disputed Domain Name does not prevent likely confusion in the minds of Internet visitors as the phrase “.com”, is simply a non-distinctive generic Top-Level Domain (gTLD) designation for the registration of a domain name. The Complainant in this regard, relies on a number of decided cases including the cases of Bellsouth Intellectual Property Corp. v. Melos aka Thomas Stergios, WIPO Case No. DTV2001-0013 and Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0912.

5.4 The Complainant contends that the addition of a geographically descriptive term to the disputed Domain Name, such as the Respondent has done in this case by adding the term “lebanon”, does not distinguish the disputed Domain Name from the Complainant’s trademark nor does it negate the likelihood of confusion. In this regard, the Complainant relies on a number of cases including Intercontinental-Hotels Corporation, Six Continentals Hotel. v. Daniel Kirchof, WIPO Case No. D2009-1661 and PepsiCo, inc. v. Kieran Mcgarry, WIPO Case No. D2005-0692.

5.5 The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name in that the Respondent has no relationship with the Complainant and that the Complainant has not authorized the Respondent to use the REVLON trademark. The Complainant submits further that the Respondent must have had constructive knowledge of the Complainant’s trade mark rights because the registration of the disputed Domain Name took place well after the Complainant’s trademark registrations. Secondly, the Complainant’s trademark rights are known to exist in the home country of the Respondent be it France or Lebanon. In support of this contention the Complainant relies on the case of Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384.

5.6 The Complainant further refers to the international reputation of the REVLON, trademark to assert that the Respondent has no rights with respect to the disputed Domain Name. In support of this contention the Complainant relies on a number of cases including the cases of Revlon v. Brandy Farris, Beiersdorf AG v. Good Deal Communications, WIPO Case No. D2000-1759 and Revlon v. IONE Inc. WIPO Case No. D2010-1000; the respective Panels in those cases relied on the international reputation of the REVLON trademark to order the transfer of the disputed domain names to Revlon.

5.7 The Complainant finally submits that the Respondent’s registration and subsequent non use of the disputed Domain Name does not constitute a bona fide offering of goods and services, as required by paragraph 4(c)(i) of the Policy; nor is there any indication or demonstration from the Respondent that the Respondent is commonly known by the disputed Domain Name as is required by paragraph 4 (c)(ii) of the Policy; nor is there any evidence of legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.

5.8 With regards to registration and use in bad faith, the Complainant submits that the Respondent registered and is using the disputed Domain Name in bad faith for the following reasons: (a) such registration and use as carried out by the Respondent is in violation of section 15 of the binding Policy between the Respondent and the Registrar of the disputed Domain Name enjoins the Registrant to ensure that the registration and use of domain names does not infringe upon the legal rights of a third party; (b) in the light of the highly distinctive and fanciful nature of the REVLON trademark the Respondent must have registered the disputed Domain Name despite being aware of the prior existence of the Complainant’s REVLON trademark; (c) panels have previously held that the mere registration and use of domain names which infringe famous trademarks belonging to others without proving any rights or legitimate interests in it represents bad faith registration and use as held in Revlon Consumer Products Corporation v. Domain Manager, Page Up Communications, WIPO Case No. D2003-0602; (d) the Respondent has failed to respond to the Complainant’s cease and desist letters and follow up letters; (e) the Respondent changed the home country in the WhoIs information to be the United States of America and provided a false fax number namely +1.555555555; and (f) the Respondent’s registration of the disputed Domain Name considered together with “inaction” constitutes bad faith registration and use.

B. Respondent

5.9 The Respondent did not file a proper reply to the Complainant’s contentions, save to file an email dated September 15, 2010 stating that he had given instructions for the transfer the disputed Domain Name to the Complainant. Therefore, the Panel shall draw such inferences as it considers appropriate from the Respondent’s email.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; (iii) and that the disputed Domain Name has been registered and is being used in bad faith.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in the proceedings.

A. Identical or Confusingly Similar

6.3 The Panel finds on the facts as recounted by the Complainant and impliedly admitted by the Respondent that the disputed Domain Name, namely, <revlonlebanaon.com> is confusingly similar to the well known worldwide REVLON, trademark owned exclusively by the Complainant and its affiliates. Upon a studied comparison of the disputed Domain Name and the Complainant’s trademark it is patently obvious that the disputed Domain Name wholly incorporates the Complainant’s REVLON trademark. This Panel is satisfied, as the Complainant contends, that the addition of a generic Top-Level Domain (gTLD) designation such as “.com”, does not in any way sufficiently distinguish the disputed Domain Name from the Complainant’s trademarks and equally, do not prevent the likelihood of confusion in the minds of Internet visitors. In the same vein, the Panel is equally satisfied that the insertion of a geographical descriptive term such as “lebanon” in the disputed Domain Name does not prevent confusion in the minds of Internet visitors and as the Complainant submits, such a domain name must be found to be confusingly similar to the Complainant’s trademarks.

6.4 The Panel in arriving at these findings in paragraph 6.3 above, draws support from a number of decided cases cited by the Complainant, in particular the case of Revlon Consumer Products Corp. v. Domain Manager, Page UP Communications, WIPO Case No. D2003 -0602 where the panel in that case, in similar circumstances as arising in this case, ordered the transfer of a number of domain names found to be confusingly similar to the Complainant’s trademark, namely, <revloncosmetics.info>, <revlonline.info> and <revlonstore.info>. Also the case of Revlon Consumer Products Corp. v. IONE Inc., WIPO Case No. D2010-1000 where the Panel ordered the transfer of the domain name, <revlonhairs.com> again to the Complainant. See also Revlon Consumer Products Corporation v. Intranzition Services Inc., WIPO Case No. D2010-1190 where the domain name, <revlonoutlet.com> was ordered to be transferred to the Complainant.

6.5 Accordingly, the Panel finds that the Complainant has established that the disputed Domain Name is confusingly similar to the Complainant’s REVLON trademark in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.6 The Panel finds that the Respondent has failed to provide any evidence or circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4 (c) of the Policy. There is undoubtedly a distinct lack of evidence of any relationship between the Complainant and Respondent or evidence of consent or any license issued to the Respondent. The Panel is also satisfied that, the Respondent has failed to adhere to the stipulated requirements necessary to establish the bona fide offering of goods and services as pronounced e.g., in the case of Oki Data Americas Inc v. ASD Inc WIPO Case No. D2001-0903, and contrary to Paragraph 4(c)(i) of the Policy.

6.7 In addition, the Panel is satisfied as the Complainant submits that the Respondent has failed to show that it is commonly known by the disputed Domain Name contrary to paragraph 4 (c)(ii) of the Policy or that there is any evidence of legitimate non commercial or fair use of the disputed Domain Name without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue contrary to paragraph 4(c)(iii) of the Policy.

6.8 Accordingly the Panel is satisfied that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy and that Respondent has not come forward to refute or challenge the Complainant’s evidence save to admit that he has ordered the transfer of the disputed Domain Name to the Complainant.

C. Registered and Used in Bad Faith

6.9 On the question of bad faith registration and use, the Panel finds that the Respondent registered the disputed Domain Name, with the sole aim of using the disputed Domain Name in bad faith. The Panel has taken a number factors unchallenged by the Respondent into account in arriving at this conclusion. First of all, the Panel finds that the Respondent knew or ought to have known of the Complainant’s worldwide exclusive rights in the REVLON, trademark, including in France and in Lebanon where the Respondent has been based at diverse times, and the sale of the Complainant’s products in approximately 175 countries through wholly owned subsidiaries, a large number of distributors and licensees. In this regard therefore, the Complainant is absolutely correct to assert that the Respondent cannot feign ignorance of the existence of well known exclusive trademark rights owned and exercised by the Complainant and its affiliates. Second, the Panel has taken into account the Respondent’s refusal to respond to the Complainant’s cease and desist letters and follow up letters as further evidence of bad faith registration and use. Third, the Panel finds that the resultant effect of the Respondent’s change of his home country address to the United States in the WhoIs information and the provision of a false fax number listed as +1.555555555 in clear violation of Section 2 of the Policy is undoubtedly further evidence of bad faith. The Panel relies on the decision of Action Instruments Inc. v.Technology Associates, WIPO Case No. D2003-0024 also cited by the Complainant, where the Panel held that the provision of false contact information is evidence of bad faith.

6.10 The Panel therefore finds that the Complainant has established the finding of bad faith use and registration within the ambit of paragraph 4(b)(iv) of the Policy.

7. Decision

7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Name <revlonlebanon.com> be transferred to the Complainant forthwith.

Ike Ehiribe
Sole Panelist
Dated: October 5, 2010.

 

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